Ex Parte MampaeyDownload PDFPatent Trial and Appeal BoardMar 8, 201713381217 (P.T.A.B. Mar. 8, 2017) Copy Citation United States Patent and Trademark Office UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O.Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/381,217 03/15/2012 Marcel Mampaey LUTZ 201357US01 5487 48116 7590 03/10/2017 FAY STTARPF/T TTf’F.NT EXAMINER 1228 Euclid Avenue, 5th Floor LE, RONG The Halle Building Cleveland, OH 44115-1843 ART UNIT PAPER NUMBER 2421 NOTIFICATION DATE DELIVERY MODE 03/10/2017 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): docketing @ faysharpe.com ipsnarocp @ nokia. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARCEL MEMPAEY Appeal 2016-005929 Application 13/381,217 Technology Center 2400 Before JOHN A. JEFFERY, ERIC S. FRAHM, and KIMBERLY McGRAW, Administrative Patent Judges. PER CURIAM. DECISION ON APPEAL STATEMENT OF CASE Introduction Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of claims 1—9, 12, and 13. Claims 10 and 11 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm the Examiner’s obviousness rejection of claims 1—7, 12, and 13, and reverse the obviousness rejection of claims 8 and 9 pro forma. We also enter a new ground of rejection for claims 8 and 9 under 35 U.S.C. § 112(b) as being indefinite. Appeal 2016-005929 Application 13/381,217 Exemplary Claims Claims 1, 6, and 8, which are representative of the issues under appeal, read as follows: 1. Method for provisioning a multimedia service to a multimedia rendering device by a multimedia application server, said multimedia application server, being coupled to said rendering device over a communication network, wherein said method further comprises: a. determining at least one additional multimedia service associated with said multimedia service provisioned by said multimedia application server, to said rendering device; b. selecting an additional multimedia service of said at least one additional multimedia service by a communications device associated with said multimedia service provisioned to said rendering device or by said rendering device; presenting the additional multimedia service on the communication device; and personalizing the additional multimedia service according to a user's preferences. 6. Multimedia system for provisioning multimedia services to a multimedia rendering device, said multimedia system comprising a multimedia application server for provisioning said multimedia service to said multimedia Rendering device, said multimedia application server being coupled to said rendering device over a communication network, wherein said system further comprises: one or more processors programmed to: determine an additional multimedia service associated with said multimedia service; and select an additional multimedia service of said at least one additional multimedia service by a communications device associated with said multimedia service provisioned to said rendering device or by said rendering device; 2 Appeal 2016-005929 Application 13/381,217 wherein the additional multimedia service is presented on the communications device; wherein the additional multimedia service is personalized according to a user’s preferences. 8. An application server, for use in Multimedia system according to claim 6 wherein said one or more processors is further programmed to: determine an additional multimedia service associated with said multimedia service; and select an additional multimedia service of said at least one additional multimedia service by a communications device associated with said multimedia service provisioned to said rendering device; wherein the additional multimedia service is personalized according to the user’s preferences. App. Br. 14—16 (emphases added). Examiner’s Rejection The Examiner rejected claims 1—9, 12, and 13 as being unpatentable under 35 U.S.C. § 103(a) over the combination of Robotham (US 2009/0019474 Al; published Jan. 15, 2009), Krikorian (US 7,877,776 B2; issued Jan. 25, 2011, filed June 7, 2005), and Matsubayashi (US 2010/0242070 Al; published Sept. 23, 2010, filed Mar. 18, 2009). Final Act. 7-18. Appellant’s Contentions (1) Appellant primarily contends (App. Br. 5—6; Reply Br. 3—5) that the Examiner erred in rejecting claims 1—9, 12, and 13 under 35 U.S.C. § 103(a) over the combination of Robotham, Krikorian, and Matsubayashi based on an interpretation that claims 1, 6, and 12 require the 3 Appeal 2016-005929 Application 13/381,217 “communications device” be separate and different from the “multimedia rendering device,” and as a result, the combination fails to teach or suggest “presenting the additional multimedia service on the communication device” as recited in independent claim 1. Appellant makes similar arguments as to remaining independent claims 6 (App. Br. 7—9; Reply Br. 3—5) and 12 (App. Br. 10-12; Reply Br. 3-5). (2) Appellant contends (App. Br. 7; Reply Br. 5—6) that the Examiner incorrectly relies upon Robotham’s mouse as teaching recited communications device recited in claim 3, which among other things, functions to make a request. (3) Appellant argues (App. Br. 9; Reply Br. 6—7) that the Examiner incorrectly reads out the preamble language of “application server” recited in claim 8, and as a result the Examiner erred in rejecting claim 8 for the additional reason that the combination fails to teach or suggest the application server as recited in claims 6and 8. (4) Appellant contends (App. Br. 9—10; Reply Br. 7) that Robotham fails to teach or suggest that the additional multimedia service is provisioned to the communication device as recited in claim 9. Principal Issues on Appeal Based on Appellant’s arguments in the Appeal Brief (App. Br. 5—13) and the Reply Brief (Reply Br. 3—8), the following issues are presented on appeal:1 1 Because independent claims 1, 6, and 12 contain similar limitations drawn to a multimedia service provisioning method, multimedia system, and communication device for use in a multimedia system, namely personalization and presenting multimedia service according to a user’s preferences, and Appellant presents similar arguments as to claims 2, 4—7, 4 Appeal 2016-005929 Application 13/381,217 (1) Did the Examiner err in rejecting claims 1,2, 4—7, 12, and 13 as being obvious because (i) the Examiner improperly interpreted representative claim 1 as not actually requiring two separate and different devices, and thus the “multimedia rendering device” and “communications device” cannot be met by a disclosure of one device for performing both recited functions, and (ii) the combination fails to teach or suggest the limitation at issue of “presenting the additional multimedia service on the communication device” as recited in representative independent claim 1? (2) Did the Examiner in rejecting dependent 3 claim as being obvious because Robotham, and thus the combination of Robotham, Krikorian, and Matsubayashi, fails to teach or suggest “a request of a communications device associated with said multimedia service” as claimed? (3) Did the Examiner err in rejecting claims 8 and 9 as being obvious because the Examiner improperly interpreted claims 8 and 9 as not actually requiring the “application server” recited in the preamble?* 2 ANALYSIS We have reviewed the Examiner’s rejections in light of Appellant’s contentions in the Appeal Brief (App. Br. 5—13) and the Reply Brief (Reply Br. 3—8) that the Examiner has erred, as well as the Examiner’s (i) remarks 12, and 13 as presented for claim 1 (see App. Br. 7—12; Reply Br. 3—5), we select claim 1 as representative of the group of claims consisting of claims 1, 4—7, 12, and 13. Claims 3, 8, and 9 are separately argued (App. Br. 9; Reply Br. 6-7). 2 We do not reach the issue of whether the combination fails to teach or suggest the limitation of an “application server” as recited in claims 8 and, because a construction of claims 8 and 9 is not possible for reasons provided infra. 5 Appeal 2016-005929 Application 13/381,217 in the Advisory Action, pages 2—5, mailed August 20, 2015, and (ii) response to Appellant’s arguments in the Examiner’s Answer found at pages 3—8. We disagree with Appellant’s contentions. With regard to representative independent claim 1 and dependent claim 3, we adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken (Final Act. 7—11), as well as the remarks at pages 2—5 of the Advisory Action mailed August 20, 2015, and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellant’s Appeal Brief (see Ans. 3—7). We concur with the conclusions reached by the Examiner with regard to the obviousness of independent claims 1, 6, and 12 in view of the combination of Robotham, Krikorian, and Matsubayashi. “During examination, ‘claims ... are to be given their broadest reasonable interpretation consistent with the specification, and . . . claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art.’” In re Am. Acad, of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990)); see also In re Morris, YU F.3d 1048, 1053—54 (Fed. Cir. 1997). Representative Independent Claim 1 Representative independent claim 1 recites “a multimedia application server” for “provisioning a multimedia service to a multimedia rendering device” over a communication network (preamble), and using a “communications device associated with said multimedia service” (paragraph b). Then, the additional multimedia service is presented “on the communication device” (claim 1, paragraph following paragraph b). 6 Appeal 2016-005929 Application 13/381,217 Nothing in claim 1 prevents or limits the recited “multimedia rendering device” (claim 1, preamble) and “communications device” (claim 1, paragraph b) from being the same device or part of the same device. In fact, claim 1 actually recites the two devices have something in common: the multimedia rendering device has a multimedia service provisioned to it (claim 1, preamble), and the communications device is “associated with said multimedia service provisioned to said rendering device or by said rendering device” (claim 1, paragraph b (emphasis added)). In this light, we agree with the Examiner (Ans. 3—6) that the claims on appeal do not actually require or contain any limitations requiring the communications device be a device separate from the multimedia rendering device. Therefore, we agree with the Examiner’s findings (Final Act. 7—8; Ans. 4—6; Adv. Act. 2—3) with regard to Robotham (see, e.g., Fig. 1; 141) as teaching or suggesting a communications device and multimedia rendering device (consumer terminals 5-1, 5-2, 5-3) and a multimedia application server (i.e., local server 20), as well as selection of an additional multimedia service (Final Act. 8; Ans. 4—5; Robotham 141). Because we also agree with the Examiner that Krikorian teaches presentation of a multimedia service (Final Act. 8—9; Ans. 6) and Matsubayashi teaches personalization according to a user’s preferences (Final Act. 9; Adv. Act. 3), we also concur with the Examiner’s conclusion of obviousness as to the subject matter of representative claim 1. In view of the foregoing, we sustain the Examiner’s rejection of representative independent claim 1, as well as claims 2, 4—7, 12, and 13 grouped therewith. 7 Appeal 2016-005929 Application 13/381,217 Dependent Claim 3 With regard to claim 3, we agree with the Examiner (Final Act. 10— 11; Ans. 7) that Robotham teaches a mouse click which meets the recited request. Appellant’s arguments (App. Br. 7) that the recited communication device receives and displays the additional multimedia service, and therefore Robotham’s mouse can neither perform the recited functions of receiving and displaying, nor teach the claimed communication device, are unpersuasive. The Examiner is not merely relying on Robotham’s mouse as teaching a communications device. Instead the Examiner relies upon Robotham’s laptop (which includes a mouse), as the communications device — one which is fully capable of receiving, displaying, and requesting information as known by one of ordinary skill in the art at the time. In view of the foregoing, we sustain the Examiner’s obviousness rejection of claim 3. Claims 8 and 9 With regard to claim 8, Appellant argues (App. Br. 9; Reply Br. 6) that Robotham allows a viewer to select an advertisement or product, but “there is no mention of an application server” as required by claim 8. Appellant contends (Reply Br. 7) that the preamble of claim 8 is drawn to a structure that includes an application server. With regard to claim 9, which depends from claim 8, Appellant argues (App. Br. 9—10; Reply Br. 7) that Robotham fails to teach or suggest provisioning a service as recited. For the reasons expressed in this opinion (infra), claims 8 and 9 are indefinite. A prior art rejection cannot be sustained if the hypothetical person of ordinary skill in the art would have to make speculative assumptions concerning the meaning of claim language. See In re Steele, 305 F.2d 859, 862 (CCPA 8 Appeal 2016-005929 Application 13/381,217 1962). Claims 8 and 9 on appeal must be reasonably understood without resorting to speculation. Here, we would require such speculation to construe the claims. Therefore, the prior art rejections must fall, pro forma, because they necessarily are based on speculative assumption as to the meaning of the claims. It should be understood, however, that our decision in this regard is based solely on the indefiniteness of the claimed subject matter and does not reflect on the adequacy of the prior art evidence applied in support of the rejection. We do not reach the merits of the Examiner’s obviousness rejection with respect to claims 8 and 9. In view of the foregoing, we reverse the Examiner’s rejection of claims 8 and 9 pro forma. NEW GROUND OF REJECTION Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection for claims 8 and 9 under 35 U.S.C. § 112(b), for indefiniteness. The essence of the requirement under 35 U.S.C. § 112(b) is that the language of the claims must make it clear what subject matter the claims encompass — i.e., ‘“whether those skilled in the art would understand what is claimed when the claim is read in light of the specification.’” Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 655 F.3d 1364, 1380 (Fed. Cir. 2011) (quoting Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986). In the present application, claim 8 recites “[a]n application server, for use in Multimedia system according to claim 6 wherein said one or more processors is further programmed to . . ..” The construction of the preamble of claim 8, and as a result claim 9 which 9 Appeal 2016-005929 Application 13/381,217 depends from claim 8, raises issues with respect to 35 U.S.C. § 112(b) for at least the reasons that follow. We find claim 8 to be open to several different interpretations. For example, claim 8 could be construed as a dependent claim, further limiting the subject matter recited in claim 6 from which it depends. Alternatively claim 8 could be interpreted as if it were an independent claim, incorporating the multimedia system and processors recited in claim 6. The “application server” recited in the preamble of claim 8 could be one and the same as the “multimedia application server” recited in claim 6. However, it is not clear if the “one or more processors” recited in claims 6 and 8 are intended to be one and the same, especially since the recitation in both claims 6 and 8 of the processors serve to perform duplicative functions, namely that of determining, selecting, and personalizing.3 Conversely, “[a]n application server, for use in Multimedia system according to claim 6” could be construed according to its plain language as application server that is intended to be used in the Multimedia system of claim 6, which according to claim 6 comprises one or more processors. The body of claim 8 requires the processors of claim 6 to perform certain functions. Under this construction, the processors of claim 8 are components of the multimedia system of claim 6, not the application server of claim 8. Therefore, based on various combinations of the interpretations just discussed, the scope and meaning of the preamble of claim 8, which recites “[a]n application server, for use in Multimedia system according to claim 6” 3 Only the function of “wherein the additional multimedia service is presented on the communications device” recited in claim 6 is not recited as one of the functions of the processors recited in claim 8. 10 Appeal 2016-005929 Application 13/381,217 (claim 8 (emphasis added)), is not clear. In general, a preamble is construed as a limitation “if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Pitney Bowes, Inc., 182 F.3d at 1305). And, a preamble is not limiting, however, “‘where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.”’ Catalina Mktg. Int’l, Inc., 289 F.3d at 808 (quoting Rowe, 112 F.3d at 478); see also Symantec Corp. v. Computer Assocs. Int’l, Inc., 522 F.3d 1279, 1288 (Fed. Cir. 2008). In one interpretation, where claim 8 is construed as dependent on claim 6, the Examiner is correct (Ans. 6) that little weight, if any, should be given to the inclusion of the “application server” recited in the preamble, because the application server recited in the preamble of claim 8 is not tied to any other element recited in (i) claim 8, or (ii) claim 6 from which claim 8 depends. See, e.g., Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999) (“If, however, the body of the claim fully and intrinsically sets forth the complete invention, including all of its limitations, and the preamble offers no distinct definition of any of the claimed invention's limitations, but rather merely states, for example, the purpose or intended use of the invention, then the preamble is of no significance to claim construction because it cannot be said to constitute or explain a claim limitation.”). In the interpretation made by the Examiner, the “application server” recited in the preamble of claim 8 is a different application server than the “multimedia application server” recited in the preamble of claim 6 from 11 Appeal 2016-005929 Application 13/381,217 which claim 8 depends (otherwise the application server in claim 8 would have been recited as “the multimedia application server of claim 6” or something to that effect). If Appellant intended to refer to the same application server, then claim 8 is indefinite for failing to particularly point out the invention. As a result, the application server recited in the preamble of claim 8 is not connected to the body of either claims 6 or 8. Another possible interpretation is that Appellant has defined a structurally complete “Multimedia system” comprising “a multimedia application server” and “one or more processors” in claim 6. Consequently, the recitation of “[a]n application server, for use in Multimedia system” amounts to a mere statement of intended use. And, again, the “Multimedia system” recited in the preamble of claim 8 would thus lack antecedent basis in claim 6 due to the failure to recite “the multimedia system recited in claim 6” or other equivalent language. Accordingly, consistent with the cited precedents, such recitation would not be entitled to patentable weight since it would be held only in the preamble and would not breathe life into the body of claim 8. Claim 8 currently recites “An application server, for use in Multimedia system” (claim 8 (emphases added)). Therefore, claim 8 purports to recite a different application server and multimedia system than the “multimedia application server” and “Multimedia system” recited in independent claim 6. In other words, if Appellant intends claim 8 to refer back to the application server and/or multimedia system recited in claim 6, the application server and multimedia system of claim 8 lack proper antecedent bases. In addition, “[a]n [] intended use or purpose usually will not limit the scope of the claim because such statements usually do no more than define a 12 Appeal 2016-005929 Application 13/381,217 context in which the invention operates.” Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). The determination of whether preamble recitations are structural limitations or mere statements of purpose or use “can be resolved only on review of the entirety of the patent to gain an understanding of what the inventors actually invented and intended to encompass by the claim.” Corning Glass Works, 868 F.2d [1251] at 1257 [(Fed. Cir. 1989)]. The inquiry involves examination of the entire patent record to determine what invention the patentee intended to define and protect. Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997). In the instant case, the application server recited in the preamble of claim 8 is merely intended to be used in a multimedia system according to claim 6 (and not necessarily the multimedia system recited in claim 6). Under a plausible interpretation, then, claim 8 could be independent because it does not further limit the system of claim 6, but rather recites a related, yet distinct invention that is merely intended to be used with the system of claim 6. Notably, the functions of the recited processor in both claims are identical except for the additional multimedia service being presented on the communications device in claim 6 (which is not in claim 8). These common limitations arguably suggest that Appellant intended for these claims to be independent; otherwise, these limitations would be superfluous. Notably, unlike the first articulated interpretation, the preamble in this interpretation is limiting: it recites essential structure, namely a server which has a definite structural meaning in the art, namely “[o]n the Internet or other network, a computer or program that responds to commands from a client.” Microsoft Computer Dictionary 474 (5th ed. 2002). 13 Appeal 2016-005929 Application 13/381,217 That is, under this interpretation, the term “server” is not merely a descriptive name or intended purpose of the invention: it is an essential structural element of the invention. See Catalina Marketing Int 7, 289 F.3d at 808 (internal quotation and citation omitted); see also Rowe v. Dr or, 112 F.3d 473, 478 (Fed. Cir. 1997) (noting that when the claim preamble recites structural limitations of the claimed invention, the USPTO must give effect to that usage).Because (i) of the aforementioned antecedent basis issues; and (ii) the application server recited in claim 8 is not connected to or in cooperation with any other limitation of either claims 6 and/or 8, we find that claim 8 (and thus claim 9 by way of dependency) is subject to multiple plausible interpretations, and is therefore indefinite. Ex Parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential) (“[I]f a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35U.S.C. § 112, second paragraph, as indefinite.”) Accordingly, we enter a NEW GROUND OF REJECTION against dependent claims 8 and 9 under 35 U.S.C. § 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which Appellant regards as the invention. CONCLUSIONS (1) The Examiner did not err in rejecting claims 1,2, 4—7, 12, and 13 as being obvious because (i) the Examiner properly interpreted representative claim 1 as not requiring separate and different devices as the “multimedia rendering device” and “communications device,” and (ii) the 14 Appeal 2016-005929 Application 13/381,217 combination teaches or suggests the limitation at issue of “presenting the additional multimedia service on the communication device” as recited in representative independent claim 1. (2) The Examiner did not err in rejecting claim 3 as being obvious because Robotham teaches a mouse click which meets the recited request, and a communications device that performs the recited functionality. DECISION The Examiner’s rejection of claims 1—7, 12, and 13 is affirmed. The Examiner’s rejection of claims 8 and 9 is reversed pro forma. Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection for claims 8 and 9 under 35 U.S.C. § 112(b). Section 41.50(b) provides that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the newly rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner.... (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record.... No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). 15 Appeal 2016-005929 Application 13/381,217 AFFIRMED-IN-PART: 37 C.F.R. § 41.50(T0 16 Copy with citationCopy as parenthetical citation